Ex Parte Cremer et al

Board of Patent Appeals and Interferences

Oct 30, 2009

11107919 (B.P.A.I. Oct. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ULRICH CREMER, MARTIN DIETERLE, SABINE JOURDAN,
JOCHEN PETZOLDT, AND KLAUS JOACHIM MULLER-ENGEL
__________

Appeal1 2009-002663
Application 11/107,919
Technology Center 1600
__________

Decided: October 30, 2009
__________

Before LORA M. GREEN, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-20 and 23.2 We have jurisdiction
under 35 U.S.C. § 6(b).

1 The Oral Hearing scheduled for September 17, 2009, was waived.
2 Claims 1-23 are pending, with claims 21 and 22 standing objected to as
being dependent on a rejected base claim (Ans. 2).

Appeal 2009-002663
Application 11/107,919

STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. A process for preparing acrylic acid by heterogeneously catalyzed
partial oxidation of at least one C3 hydrocarbon precursor compound,
wherein the overall selectivity of secondary component formation SOVE is
≤ 1.5 mol%.

The Examiner relies on the following evidence:
Unverricht US 6,525,217 B1 Feb. 25, 2003

We reverse.

ISSUE (Indefiniteness)
The Examiner concludes that claims 1-20 and 23 are indefinite under
35 U.S.C. § 112, second paragraph.
Appellants contend that the Specification provides a detailed
description of the procedures that can be used to practice the claimed
process, and that those skilled will readily appreciate the metes and bounds
of the claimed process.
Thus, the issue on appeal is: Have Appellants demonstrated that the
Examiner erred in concluding that claims 1-20 and 23 are indefinite under
35 U.S.C. § 112, second paragraph?

2
Appeal 2009-002663
Application 11/107,919

FINDINGS OF FACT
FF1 The Specification teaches that “[a]crylic acid is an important
monomer which finds use as such or in the form of its alkyl esters for
obtaining, for example, polymers suitable as adhesives.” (Spec. 1.)
FF2 According to the Specification, “acrylic acid can be prepared by
heterogeneously catalyzed gas phase partial oxidation of at least one of the
two hydrocarbon precursor compounds each having three carbon atoms
(referred to in this document as ‘C3 hydrocarbon precursor compounds’),
propene and propane.” (Id.)
FF3 The Specification teaches further:
The process for heterogeneously catalyzed gas phase
partial oxidation of propene to acrylic acid proceeds in principle
in two successive steps, the first step leading from propene to
acrolein and the second step from acrolein to acrylic acid.
Since there are catalysts which are capable of catalyzing either
both or, in a tailored manner, in each case only one of the two
steps, the heterogeneously catalyzed gas phase partial oxidation
of propene to acrylic acid may in principle be carried out either
in a single reaction stage or in two or more spatially successive
reaction stages, and a particular reaction stage is characterized
by its catalyst charge and the accompanying other, generally
specific, reaction conditions.

(Id.)
FF4 The Specification notes that common to the above processes that are
known for preparing acrylic acid, “what is obtained is not pure acrylic acid
but rather a reaction gas mixture which, in addition to acrylic acid and the
acrolein intermediate . . . comprises numerous other compounds which have
at least one oxygen atom, at least one carbon atom and at least one hydrogen
3
Appeal 2009-002663
Application 11/107,919

atom.” (Id. at 2.) The disclosure refers to those other compounds in the
collective as “secondary components.” (Id.)
FF5 According to the Specification, the acrylic acid then needs to be
removed from the product gas mixture, generally by means “of combinations
of absorptive, extractive, and/or distillative or rectificative separating
processes,” which processes are costly and inconvenient (id.).
FF6 The Specification teaches that the invention is directed to a remedy
for the above problems, wherein the overall selectivity SOVE of secondary
component formation is ≤ 1.5 mol% (id. at 2-3). According to the
Specification:
The selectivity Si of the formation of an individual
secondary component i in mol% refers to one hundred times the
quotient of the molar amount of the secondary component i
formed divided by the molar amount of the at least one C3
hydrocarbon precursor compound converted in the
heterogeneously catalyzed partial oxidation. In this document,
the overall selectivity SOVE of secondary component formation
refers to the sum of the different individual selectivities Si over
all secondary components i.

(Id. at 3.)
FF7 The Specification teaches that a conventional process of
heterogeneously catalyzed partial oxidation of at least one C3 hydrocarbon
precursor compounds may be initially carried out, which the Specification
refers to as the main reaction (id. at 4).
FF8 The Specification then teaches:
The product gas mixture obtainable in this way and
having a comparatively elevated secondary component content
(for example secondary component formation ≥ 1.7 mol%) is
subsequently, if appropriate after addition of inert gas (e.g. N2,
4
Appeal 2009-002663
Application 11/107,919

CO2, steam or any mixture thereof) or of molecular oxygen or
of a mixture of molecular oxygen and inert gas, in a
postreaction stage at elevated temperature, conducted through a
catalyst charge in such a way that the acrylic acid present in the
product gas mixture remains substantially unchanged, while the
secondary components are at least partly combusted to carbon
oxides and water, which reduces the overall selectivity of
secondary component formation (SOVE) over the entire process
(preference is given in accordance with the invention to SOVE
(in mol%) falling by at least 0.3, preferably by at least 0.5,
more preferably by at least 0.8 and most preferably by at least
1, percent or more), without significantly impairing the
selectivity of acrylic acid formation . . . .

(Id. at 4-5.)
FF9 The Specification further notes that “the purer the C3 hydrocarbon
precursor compound is, the lower the overall selectivity of secondary
component formation in processes for preparing acrylic acid by
heterogeneously catalyzed partial oxidation.” (Id. at 24.)
FF10 The Examiner rejects claims 1-20 and 23 under 35 U.S.C. § 112,
second paragraph, “as being incomplete for omitting essential steps, such
omission amounting to a gap between the steps.” (Ans. 3.)
FF11 The Examiner finds that the “omitted steps are those responsible for
producing a selectivity for the formation of acrylic acid which is greater than
that observed in the prior art.” (Id.)

PRINCIPLES OF LAW
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.”
Miles Laboratories, Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir.
5
Appeal 2009-002663
Application 11/107,919

1993). Claims are in compliance with 35 U.S.C. § 112, second paragraph, if
“the claims, read in light of the specification, reasonably apprise those
skilled in the art both of the utilization and scope of the invention, and if the
language is as precise as the subject matter permits.” Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986).
However, “breadth is not to be equated with indefiniteness,” and the
rejection is reversed. In re Miller, 441 F.2d 689, 693 (CCPA 1971); see also
In re Hyatt, 708 F.2d 712, 714-15 (Fed. Cir. 1983).

ANALYSIS
Appellants argue:
Instead of applying complicated process combinations
for removing acrylic acid from the product gas mixture (page 2,
lines 22 to 29 of the specification), the present specification
describes conducting the gas phase oxidation in such a manner
that the content of the secondary components in the reaction gas
mixture is as low as possible. Which specific method is applied
for such reduction of the secondary component content in the
product gas does not matter, as different methods are
applicable. One applicable method is described from page 4,
line 40 to page 5, line 17 of the specification. From page 24,
line 22 to page 25, line 30 other methods are described to reach
the specified value for SOVE. In addition, the skilled artisan
knows that the choice of the catalyst applied (from those known
in the state of the art) has a great influence. Furthermore, the
skilled artisan knows that a reduction of the raw material
conversion also helps.

(App. Br. 4.)
Appellants argue that they are claiming their invention, as “producing
acrylic acid with an overall selectivity of secondary component formation of
6
Appeal 2009-002663
Application 11/107,919

≤ 1.5 mol%” is the invention (Reply Br. 6). Appellants assert further that
the Specification “provides a detailed description of the procedures that can
be used to practice the claimed process,” and that “those skilled in the art
will readily appreciate the metes and bounds of the claimed process.” (Id.)
We agree with Appellants that the ordinary artisan would understand
the metes and bounds of the claims. The Examiner appears to actually be
concerned with the breadth of the claims, as they encompass any method of
for preparing acrylic acid by heterogeneously catalyzed partial oxidation of
at least one C3 hydrocarbon precursor compound, so long as the overall
selectivity of secondary component formation SOVE is ≤ 1.5 mol%, but
breadth is not indefiniteness.

CONCLUSION OF LAW
We conclude that Appellants have demonstrated that the Examiner
erred in concluding that claims 1-20 and 23 are indefinite under 35 U.S.C.
§ 112, second paragraph.
We thus reverse the rejection of claims 1-20 and 23 under 35 U.S.C.
§ 112, second paragraph, as being incomplete for omitting essential steps,
such omission amounting to a gap between the steps.

ISSUE (Anticipation)
The Examiner finds that claims 1-20 are anticipated by Unverricht.
Appellants contend that Unverricht does not teach or suggest that the
overall selectivity of secondary component formation SOVE is ≤ 1.5 mol%.
7
Appeal 2009-002663
Application 11/107,919

Thus, the issue on appeal is: Have Appellants demonstrated that the
Examiner erred in finding that Unverricht teaches or suggests that the overall
selectivity of secondary component formation SOVE is ≤ 1.5 mol%?

ADDITIONAL FINDINGS OF FACT
FF12 The Examiner rejects claims 1-20 under 35 U.S.C. § 102(b) as being
anticipated by Unverricht (Ans. 3).
FF13 The Examiner finds:
Unverricht discloses (Column 14, lines 12-17) selectivity of ≥
97 for the formation of acrylic acid from acrolein (a C3
precursor compound). Unverricht discloses (Column 14, lines
12-17) selectivity of ≥ 99 for the formation of acrolein from
acrylic acid (a C3 precursor compound). Taken together this
means that the selectivity of formation of acrylic acid from
propene is up to 100%.

(Id.)
FF14 The Examiner thus notes that “Unverricht establishes a lower limit on
the selectivity of each reaction step but does not establish an upper limit on
the same.” (Id. at 4.)

PRINCIPLES OF LAW
“It is well settled that a claim is anticipated if each and every
limitation is found either expressly or inherently in a single prior art
reference.” Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354,
1361 (Fed. Cir. 1998). In general, a limitation is inherent if it is the “‘natural
result flowing from’” the explicit disclosure of the prior art. Schering Corp.
v. Geneva Pharms. 339 F.3d 1373, 1379 (Fed. Cir. 2003). “Inherency . . .
8
Appeal 2009-002663
Application 11/107,919

may not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.”
MEHL/Biophile Int'l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999)(quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).

ANALYSIS
Using the Examples of Unverricht, Appellants assert that “considering
the highest values for SDP [selectivity for acrolein formation] and SAA
[selectivity of acrylic acid formation] reported anywhere in the Examples of
the reference—i.e., 95.5% and 95.8%, respectively, the lowest value for the
overall selectivity of secondary component formation is 12.2%,” whereas
“the upper limit on the overall selectivity of secondary component formation
in the claimed process is 1.5 mol%.” (Reply Br. 4.)
Appellants assert that while the “Examiner takes the position that the
selectivity in each stage in Unverricht [ ] may be 100% of the desired
product, in which case the overall selectivity of the secondary components
would be 0 mol% . . . there is no disclosure in the reference of selectivities
as high as 100%.” (Id.) Appellants assert further that while Unverricht may
teach at columns 11 and 14 “selectivities of ≥97 mol%, . . . that is wishful
thinking, as demonstrated by the Examples of the reference.” (Id.)
We agree with Appellants. While Unverricht may indicate
selectivities of ≥ 97 mol%, the ordinary artisan would not read that as a
selectivity of 100%. In addition, the Examiner has not refuted Appellants’
calculations based on the Examples of Unverricht that the lowest value for
9
Appeal 2009-002663
Application 11/107,919

the overall selectivity of secondary component formation is 12.2% (Reply
Br. 4), in contrast to the claimed value of ≤ 1.5 mol%.

CONCLUSIONS OF LAW
We conclude that Appellants have demonstrated that the Examiner
erred in finding that Unverricht teaches or suggests that the overall
selectivity of secondary component formation SOVE is ≤ 1.5 mol%.
We thus reverse the rejection of claims 1-20 under 35 U.S.C. § 102(b)
as being anticipated by Unverricht.

REVERSED

cdc

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA VA 22314

10